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First (inventor) to file

Mark your calendars for March 15, 2013, because on March 16, 2013, the US patent office switches to the new AIA “first-to-file” system. In fact, mark your calendars for March 14, 2013, because it is quite possible that the USPTO servers may crash on March 15 under the weight of a huge number of last minute electronic patent filings.

The US patent system has traditionally been friendly to individual inventors and smaller startups. The old system gave inventors some time to work to improve their original concepts before filing. Inventors were protected because the old system allowed them to prove (using lab notebooks and the like) that they had thought of the invention some time before their patent filing date. This proof was called “swearing back”.

The rest of the world, by contrast, has been on a stricter “race to the patent office” aka “first-to-file” standard. Under “first-to-file”, the inventor with the earliest patent office time stamp wins, end of discussion.

Congresses’ 2011 America Invents Act (AIA) changes the US from the old standard to a US version of “first-to-file”. There are some tricky aspects to this new standard. It is possible (with evidence, and only for a limited time) to file a USPTO “derivation proceeding” to challenge a non-inventor (i.e. alleged thief) who filed first. Inventors are also given up to 12 months after publication or sale of their invention to file, without having their own publication or sale used against them, BUT…

If an inventor publishes or otherwise discloses their idea, someone else hears about the idea, makes a few changes and files first, under the new rules this could legally knock out the inventor’s rights to these improvements. Since, in the real world, inventions often come into focus gradually over time as a series of small improvements, you can see the problem. To add to the fun, the courts haven’t even seen new rule cases like this yet, and it will take years for them to sort things out.

The moral is, under the new rules, if you want decent patent protection for your work, consider filing on initial concept, and filing again on significant improvements. Resist the temptation to share your still forming ideas with the world. The old days of protection by “swearing behind” are gone as of March 15, 2013. What was OK to do last year is not OK to do this year.